Raymond Hoser
[2017] ATMO 61
•16 June 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 1653865 (44) - hands on - in the name of Raymond Hoser.
| Delegate: | Iain Campbell Thompson |
| Representation: | Applicant: self represented |
| Decision: | 2017 ATMO 61 Trade Marks Act 1995 s33 – s41 – examiner’s ground for rejection – inherent adaptation of the Trade Mark – Trade Mark to be accepted for possible registration. |
Background
In this matter Raymond Hoser (‘the Applicant’) has applied under the Trade Marks Act 1995 (‘the Act’) to register the trade mark appearing below:
Application No: 1653865
Priority Date: 22 October 2014
Services:Class 44: Removal, capture, killing, transportation, relocation, control, eradication, handling, movement, propagation, dispatching, elimination or disposal of unwanted or other venomous snakes, other kinds of reptiles, other kinds of wildlife and all other kinds of animals including all metazoa, plants, bacteria, fungi and viruses from private premises of persons, companies and other entities in accordance with local, state, federal and national wildlife laws and all other rules and regulations, by-laws, and ordinances and all other activity covered by licenses, authorisations and permits, including snake controller Victoria, damage mitigation Queensland, wildlife demonstrators permit Victoria, kangaroo control permit New South Wales, wildlife and crocodile control permit Queensland, possum controller Victoria, damage mitigation permit Queensland, wildlife displayers permit Victoria, wildlife rescuer permit New South Wales, and snake removal permit Western Australia, camel control permit Northern Territory, dangerous animal removal permit Northern Territory, wildlife rescuer permit New South Wales, scientific permit to catch, study, tag, mark, microchip, possess, control, relocate, euthanize or keep wildlife in any and all locations, states or other jurisdictional zones, and all other equivalent permits as issued by local, state, federal, national or other wildlife authorities, departments, and government authorities including in all Australian states and territories; use of tongs, jiggers, nooses, shovels, hooks, nets, traps, base stations, repelling devices, solar repellers, attraction devices, lures, chemicals and other means as well as any kind of devices, to catch, control, immobilize, eradicate, relocate, transport or otherwise deal with any kind of wildlife, including, plant, animal, bacteria, slime mould, fungi, metazoan or protozoan as well as provision of information on such reptile and animal related matters as covered by all preceding kinds of permits and authorities including in print, digitally, online or via other media, including wildlife, animal and reptile related consultancy work
Trade Mark: hands on
(‘The Trade Mark’)
An examiner of trade marks has stated that there are grounds for rejection of the Trade Mark under section 41 of the Act in the following terms:
The expression HANDS ON is commonly used by other traders to indicate a direct, physical or practical approach to a service or to indicate a service which involves a degree of personal, active or direct intervention or activity.
When used in relation to your services, the expression HANDS ON indicates that your services involve a physical and practical approach, and/or that your services involve a degree of personal, practical and/or direct intervention or activity. That is your services are HANDS ON in nature.
Other traders should be able to use HANDS ON in connection with goods or services similar to yours.
The examiner’s objection with the above ground for rejection has been maintained over seven reports in response to which the Applicant presented evidence and submissions. The Applicant then requested to be heard. As a delegate of the Registrar of Trade Marks (‘the Registrar’) I heard the submissions of the Applicant at a hearing by teleconference in Canberra on 25 May 2016.
Section 41
Section 41 of the Act provides:
41Trade mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:For goods of a person and services of a person see section 6.
Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
The above iteration of section 41 of the Act came into force when the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 commenced on 15 April 2013. The Explanatory Memorandum for section 41 of the Act states:
This item amends the Trade Marks Act to clarify that the presumption of registrability applies to section 41.
Under the previous Trade Marks Act 1955 the applicant bore the onus of demonstrating to the Registrar that their mark was registrable. One of the policy objectives of the current Trade Marks Act was to reverse this. The intention was to introduce a ‘presumption of registrability': that a trade mark ought to be registered unless there is a specific objection to it.
This policy was intended to be implemented by paragraph 33(1)(b), which provides that the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The effect of this was to shift the onus from the applicant to the Registrar.
While this has been effective in respect of most of the grounds on which an application may be rejected, this has not been effective in implementing a presumption of registrability in respect of section 41 (which deals with the capacity of the trade mark to distinguish the applicant's goods and services from others).
The decision in Blount Inc v The Registrar of Trade Marks[1] found that, if there were any doubt about whether a mark was inherently adapted to distinguish the applicant's goods, subsection 41(4) required the Registrar to resolve the doubt according to the decision-making process in subsections 41(5) and (6). The effect of this was that presumption of registrability in section 33 could not apply.
This is contrary to the intended policy of the new Act.
The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. This is achieved by removing the reference to the decision-making process in section 41, and instead focussing on the characteristics that a mark must possess for it to be capable of distinguishing. The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant's favour.
To ensure that the presumption of registrability applies, the criteria for the trade mark's capacity to distinguish are framed negatively by defining the circumstances in which a trade mark is not capable of distinguishing. Consistent with the presumption, this will focus the Registrar's enquiry on what must be wrong with the mark before the Registrar is entitled to reject it.
Note that while the amendment ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.
[1] (1998) 40 IPR 498
In terms of subsection 41(1) the Trade Mark must be rejected if not ‘capable of distinguishing’ the Applicant’s services in respect of which the Trade Mark is sought to be registered. Trade marks which are ‘capable of distinguishing’ are at a lower threshold of inherent adaptation to distinguish than are those trade marks which are ‘distinctive’.
Setting to one side those trade marks which are either ‘distinctive’ or ‘capable of distinguishing’ (and thus immediately registrable in terms of section 41), the question of whether or not a trade mark falls foul of either subsection 41(3) or subsection 41(4) depends on the Registrar being satisfied as to the degree of the lack of ‘inherent adaptation’ to distinguish the particular goods or services of that trade mark.
As explained by Branson J in Blount Inc v Registrar of Trade Marks[2]:
Where the Act requires the Registrar to be "satisfied" of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
[2] [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37-241
The consideration of inherent adaptation to distinguish is the familiar one oft quoted from Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5] where Kitto J stated:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
In support of the ground under section 41 the examiner has relied on the dictionary definition of the expression ‘hands on’ and Internet research which has shown that various Australian domestic pest control services (and some overseas fauna removal services) use the expression in relation to their services. The dictionary definition is that within the Oxford English Dictionary (‘OED’)which provides:
a.Designating an attitude, policy, etc. characterised by involvement or intervention. Cf HANDS OFF adj 1.
b.Involving or offering active participation in an activity in order to gain practical experience of it; (of experience, training, etc.) practical as opposed to theoretical.
c.Of a job, role, etc., esp. a managerial one: involving direct experience of routine business or supervision of staff; carried out or overseen directly or personally.
The bolded portions of the definitions, above, are those relied upon by the examiner. I consider that reference ‘c’ within the OED definitions can be immediately discounted from considerations as the highlighted words are not the complete definition and the Applicant’s services have nothing to do with management of business or of staff. As regards the OED definition at ‘a’, I confess to being somewhat nonplussed in my attempts to relate the definition to the specific services under consideration and how the definition might indicate that the Trade Mark is not capable of distinguishing.
The Internet material relied upon by the examiner is, as I have indicated, in the main from the webpages of domestic pest control companies and wildlife removal operatives. These provide the examples given below:
a.AAA Wildlife Control. Specializing in Hands-On Squirrel Removal & Control.[3]
[3] (Canada).
b.The Humane Society of the United States – Choosing a Wildlife Control Company[4]:
[4] (USA).
If an animal is inside a structure, insist on the use of guaranteed eviction/exclusion strategies that include one-way doors and/or hands-on removal and reunion of families that will ultimately lead to their release outside of the structure.
c.Skedaddle Humane Wildlife Control[5]
[5] (United States).
1. Canada’s largest wildlife control company, in business since 1989, with the experience of over 200,000 wildlife removals and exclusions.
2. Over 30 service vehicles and a dedicated customer service centre to meet all of your needs.
3. A lifetime guarantee on all workmanship and materials, backed by an A+ rating and accredited business designation from the Better Business Bureau.
4. An industry-leading property assessment system to ensure we identify and prevent all wildlife entry points and building damage.
5. Hands-on removal and prevention techniques that we pioneered and provide superior results to trapping or illegal relocation.
6. Fully trained and certified in building repair, decontamination, restoration and insulation installation.
7. Fully bonded and WSIB covered with $5 million liability insurance and certified in roof and ladder safety.
8. A truly “Green” company: environmentally-friendly, poison-free animal/pest control and cellulose insulation.
9. Humane methods that minimize injury and stress to the animals, backed by licensing from the Ministry of Natural Resources and Ministry of the Environment. We keep animal families together and do not relocate them.10. The preferred choice by Humane Societies and SPCA’s because we care about wildlife and the environment.
d.Anything Wild[6] – about us:
[6] (Canada).
Specializing in humane wildlife removal, using the most innovative techniques to get wildlife out of your home and to KEEP THEM OUT! Using live trapping, one way doors, repellents and hands on removal, we safely rid your home and properties of unwanted wildlife and protect it from further intrusion. We deal with all wildlife including bees, rats, bats, birds, squirrels, skunks, raccoons, foxes and coyotes, all these species and more. All animals are dealt with humanely without the use of poisons, pesticides or unfriendly chemicals in your home or property. We do repairs of animal damage, chimney and vent screens, as well as animal exclusion to prevent further damage and entry to your home or property. With offices close to you and 24 hour emergency service, as well as local 416 and 1-800 numbers we're just a phone call away to servicing you!
e.Urban Wildlife Control[7]
[7] (USA).
Urban Wildlife Control Inc was founded in 2005 to provide humane solutions for wildlife problems. Our methods are designed to fit your situation and our removal procedures work with the seasonal biology and life-stages of the animal; this ensures a safe and humane removal, reduces animal stress, and minimizes property damage. At Urban Wildlife Control Inc we believe that "hands-on" removal techniques are most effective when coupled with our proven prevention program.
f.Wombat Awareness Org[8]
[8] (Australia).
The Wombat Awareness Organisation wants a better life for wombats. We think they are wonderful, unique and important! Rather than blaming the weather, we take a very hands on approach when it comes to their welfare. To every problem, there has been very simple, achievable solutions and despite having a very small team, we get out there and do our job, we save lives. The wombats respond amazingly and teach us so much!
g.iPESTCONTROL[9]
[9] (Australia).
Do you have a pest problem in your home? The team at iPest Control Melbourne can handle all your residential pest control problems. Our experts are dedicated hard working and fully licensed to treat and remove a range of pests and vermin from your home.
Pest control refers to the management or regulation of pests and rodents in a home, or a building. When left uncontrolled, pests can cause a lot of damage to households, businesses, gardens and human health. Pests can spread bad diseases, destroy household items and consume vegetables as well as plants. Therefore, it is essential to control these pests and a number of pest control methods are used today as can be seen below:
There are many different techniques and methods of residential pest control. The two most popular are physical and chemical. The physical approach includes the use of hands-on methods and equipment to control pests. These include setting traps and and similar equipment to capture them. The chemical approach includes using pesticides and insecticides. Today, there are very may different pesticides and insecticides available in the market. These chemicals can help in the control and elimination of pests and insects on your property. Whilst we aim to be as eco-friendly as possible sometimes certain pests require a stronger approach to fully eradicate them.
h.Active Pest Management[10]
[10] (Australia).
Active Pest Management are your No.1 local, family-owned and operated pest control service based in Ballina.
Unlike many others, we are not a faceless business. We are proud to be hands-on operators, The faces you see here on our website are the same ones you will recognise at your door. Year after year, we are the guys you can trust in your home.
i.Intercept Pest Control Pty Ltd[11]
[11] (Australia).
Intercept Pest Control is a premier pest management organisation with over 15 years experience in providing pest control services to industrial, commercial and domestic premises. We utilise an integrated pest management approach for the ultimate protection of our clients' businesses and homes. We use the latest technology in pest control, giving our clients the safest, the most effective and easy on the budget pest control services. Our reputation for integrity, reliability and quality make us the pest control choice of government agencies and the private sector.
Intercept Pest Control provide a holistic approach to your pest control needs from the time our professional pest managers step into your premises. Our pest managers comprehensively inspect your property and provide you with the following details:-
Pest Control Procedures
Risk Assessment
Frequency of inspection and service
Types of Chemicals to be used with MSDSs
Our Occupational Health and Safety Systems
Reporting ProceduresEmergency Call Out Contacts and Procedures
Your premises are managed by a dedicated, experienced, 'Hands on' professional Pest Managers with access to the entire resource base of Intercept Pest Control. Our Pest Managers are open and enthusiastic and will approach the pest management of your property with a commitment to a pest free zone.
The webpages of Buzzkill Pest Control Brisbane[12] and Sydney Pest Control[13] show usages of the expression ‘hands on’ in similar prominence to those at paragraphs [b] to [i], above.
[12]
[13]
I interpose now to state that my reading of the specification of services is that, in the opening passage of the specification, the various services of ‘Removal, capture, killing, transportation, relocation, control, eradication, handling, movement, propagation, dispatching, elimination or disposal of unwanted or other venomous snakes, other kinds of reptiles, other kinds of wildlife and all other kinds of animals including all metazoa, plants, bacteria, fungi and viruses’ are qualified by the balance of the specification which follows that first passage and that therefore the scope of the specification is limited to those services controlled by the various legislative instruments mentioned within the specification. These services may be generally categorised as being ‘wildlife fauna and flora removal services’.
With that in mind: in the assessment of the inherent adaptation of the Trade Mark there are two immediate caveats concerning the examples of usage within the examiner’s research of the use of the expression ‘hands on’ by other traders:
1.With one possible exception, the expression is not being used by other traders in a manner which would infringe a trade mark granted in respect of it; rather the use of the expression is buried within bodies of text in general descriptions of the nature of all fauna removal services rather than specific and highlighted references to the particular kind of service that the websites are describing.
2.On Australian websites the expression ‘hands on’ (as well as being buried within a body of text) is being used in relation to domestic pest control services whereas the Applicant’s services relate to various wildlife fauna and flora removal services. One does not in my experience of the world call upon a domestic pest control operative to remove snakes, crocodiles or camels.
I do not consider that the one example of the prominent use of the expression ‘hands on’ in overseas use at paragraph [11]a, above, is sufficient to satisfy the Registrar that the Trade Mark lacks inherent adaptation to distinguish such as to fall for consideration under subsections 41(3) or (4). As regards the single usage at paragraph 11[a], I note that while the Registrar may take notice of overseas usages, a major precedent[14] concerning overseas usages involved the widespread overseas use of the generic name of a game (‘Caps the Game’). However, the single prominent usage of the non-generic expression ‘hands on’ on a Canadian website within a more general heading does not suggest to me that the inherent adaptation of the Trade Mark should be regarded in similar manner to that of ‘Caps the Game’ within Australia.
[14] Larry John Powell v Glow Zone Products Pty Ltd [1996] FCA 1899 (‘Caps the Game’).
Further, a word (or expression) might be in common use in relation to particular goods or services and yet not be one that other traders will want to use honestly and fairly in relation to those goods or services in a manner which would infringe a trade mark registered in respect of it. An example of such a trade mark is YIELD as a trade mark for pesticides; as remarked by the delegate in Ciba-Geigy Australia Ltd v Eli Lilly And Co[15], after she had reviewed the various authorities:
Thus the appropriate criterion for disqualifying a word common to the trade is not that the word is in common use in the relevant trade but that that commonly used word is used in relation to the relevant goods (or services). The fact of its frequent use is, I think, of considerably less importance than the manner of its use in assessing whether it is adapted to distinguish goods as a trade mark. Therefore although the word "yield" occurs quite frequently in agricultural parlance as is illustrated by the pesticide literature and advertising materials which the opponent has provided, consideration of the way in which it is used leads inevitably to the conclusion which I had already reached that pesticides have not been and could not be usefully or meaningfully described by the word "yield". The material which the opponent provided does not show any use of the word "yield" which would be inhibited or jeopardised by registration of the applicant's mark or which would infringe such a registration.
[15] (1983) 2 IPR 353, at 362.
A similar example would be the hypothetical trade mark WET for use in relation to bottled water. Although all bottled water is wet, why would other traders need to extol the nature or characteristic of their bottled water as being wet? Likewise, although the word ‘showdown’ might be used in relation to all sporting competitions, the Court has found[16] that the trade mark SHOWDOWN distinguished the registered owner’s services provided in relation to sporting competitions.
[16] SA Brewing Co Pty Ltd v Carlton & United Breweries Ltd [2001] FCA 902; (2001) 185 ALR 719; [2001] AIPC 91-734; 53 IPR 90.
The Trade Mark is obviously not one that is generic and thus required for use by other fauna and flora removal operatives. The examiner’s research confirms that other wildlife/flora and fauna operatives (and pest controllers) do not use the expression ‘hands on’ prominently to extoll a point of difference, or as prominent description, in relation to the similar services that they offer in a manner which would infringe a trade mark granted in respect of it. Therefore I am not satisfied that other traders would, without improper motive, want to use the expression for the sake of its ordinary meaning in a manner which would infringe a trade mark granted in respect of it.
It follows that I find, on this basis, that the Registrar could not be satisfied that the Trade Mark is not capable of distinguishing the Applicant’s services.
Decision
Section 33 of the Act provides:
33Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note:For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:For applicant see section 6.
I will accept the Trade Mark for possible registration.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
16 June 2016
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